WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kesko Oyj (K-market.net) v. Minna Heikkinen
Case No D2001-1170
1. The Parties
Complainant is Kesko Oyj, a company with mailing address Satamakatu 3, 00016 Kesko, Finland. Complainant is represented by Esa Korkeamäki and Matti Vedenkannas, Attorneys at Law, HH Partners, Attorneys at Law, Ltd., P.O Box 232, FIN-00101 Helsinki, Finland.
Respondent is Minna Heikkinen, a private person. According to the contact information submitted by Respondent, its mailing address is Putouskuja 7b 13, 01600 Vantaa, Finland, and telephone number +358-41-4708694; its e-mail address is indicated as "email@example.com".
2. Domain Name and Registrar
The domain name at issue is <k-market.net> The Registrar is Bulk Register.com, Baltimore, MD 21202, United States.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint by e-mail on September 25, 2001, and in hard copy on September 26, 2001; the same day the Center acknowledged receipt of Complaint.
Having verified that the Complaint complied with the formal requirements, the Center issued, on October 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding, which was notified to Complainant and to Respondent as well as to the Registrar and to ICANN.
On October 16, 2001, a Response was received in e-mail, it was also received in hard copy on October 19, 2001. A Response Deficiency Notification was issued on October 17, 2001 (see Discussions and Findings).
The Center invited Mr. Henry Olsson to serve as Sole Panelist in the case and received, on October 31, 2001, Mr. Olssonīs Statement of Acceptance and Declaration of Impartiality and Independence. The same day the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date which was communicated to the Parties. The Projected Decision Date was November 14, 2001.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant is a limited public company, which is organised and existing under the laws of Finland with its principal place of business in Helsinki, Finland.
No particular information is available about Respondentís activities.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the principal office of the concerned Registrar is located.
5. Parties' Contentions
Complainant first contends that it is a leading trading company in Finland and that it is also expanding its operations to neighbouring markets. It is a marketing and logistics company, which develops retail concepts and marketing systems. Its retailing operations are conducted in close chain co-operation with about 1,400 retailers who run their businesses under Complainantís trademarks and it also wholesales directly to industry, restaurants and other wholesalers. Complainantís commercial operations are organised into four divisions. The retail stores which are being run by members use Complainantís umbrella device trademark "K". The members of the chain are ranked in order of size to "K-Lähikauppa", "K-Market", "K-Supermarket" and "K-Citymarket." Complainant has submitted a copy of Kesko's Annual Report 2000 to show information about Complainant and its activities.
Complainant submits that it is the owner of, among others, Finnish trademark registrations for the design marks "K-LÄHIKAUPPA", "KK-MARKET", "KKK-SUPERMARKET" and "KKKK-CITYMARKET" (registration numbers 139866-139869) in classes 16, 21, 24, 25, 28, 29, 30, 31, 32, 34, 35, 39 and 40. The size of the respective retail outlet is indicated by the number of the letters "K" that is being used to identify the respective retailer.
Complainant asserts that there can be no doubt that average Finnish consumers, because of the exceptionally strong market position of the Kesko Group, have become familiar with the names/device marks as indicating the established trademarks for the retail outlets for Kesko's products. To support this, Complainant has submitted an affidavit issued on September 13, 2001, on behalf of the Federation of Finnish Commerce and Trade. That document states, inter alia that:
due to the strong market position of Kesko Oyj, the use of the Trademark K-Market is and has all the time been very widespread. In the present situation, it is therefore evident that an average Finnish consumer does associate the symbol K-Market specifically to the operations of Kesko Oyj and to the outlets belonging to Keskoīs chain.
In addition, Complainant contends that the mark "K-MARKET" is also protected by virtue of its establishment in the market in accordance with Article 2 of the Finnish Trademark Act. This Article prescribes that a sole right in a trademark may be acquired even without registration after the mark has become established and that also trade symbols may acquire protection on the basis of establishment in the market. According to the second Paragraph of that Article, a trade symbol shall be regarded as established if it has become generally known in the appropriate business or consumer circles in Finland as a symbol specific to its proprietorís goods.
Identity or Confusing Similarity
Complainant contends that the relevant part of the domain name at issue is "K-MARKET" and that this part is identical with the distinctive trademark "K-MARKET", which is owned by Complainant.
Rights or Legitimate Interests in the Domain Name
In this respect, Complainant alleges that, due to the exceptionally strong market share and long period of use of the word "K-MARK" as a symbol for Complainantís activities, that mark has obtained a broad protection against imitators by virtue of Article 2 of the Finnish Trademark Act. As a result, according to Complainant, the word "K-MARKET" is not one that Finnish traders would legitimately choose unless seeking to create an impression of association with Complainant.
Complainant, furthermore, alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to apply for, or use, any domain name incorporating any of those marks.
According to Complainant, Respondent has initiated a website at the address <k-market.net> where Respondent uses, without proper authorisation, the registered trademark "K-MARKET", something that, in the view of Complainant, proves that Respondent has chosen the domain name at issue for the sole purpose of creating a connection with Complainantís trademark "K-MARKET." To support its contentions in this respect Complainant has submitted a printout of the website Ė in Finnish - at the disputed address.
On the basis of these allegations Complainant concludes that Respondent has in fact no rights or legitimate interests in respect of the domain name at issue.
Registration and Use in Bad Faith
In this respect Complainant has submitted a number of contentions.
First, Complainant alleges that Respondent has taken active steps to conceal its true identity in connection with the domain name. Thus, according to Complainant, Respondent has provided inaccurate and false address information. In this respect Complainant submits that the address "Minna Heikkinen, firstname.lastname@example.org, Istanbul, TR 00000, Turkey" is not a valid mailing address. Also, the mobile telephone number +358-40-7139272 is inactive, according to a query at Sonera Ė which operates the extension (0)40.
Second, Complainant alleges that the trademark "K-MARKET" does in fact belong to the best known trademarks in Finland and that it is inconceivable that a Finnish natural person would not be aware of this fact. In addition, Complainant contends that any realistic use of the domain name must misrepresent an association with Complainant resulting in trademark infringements. Due to the strong establishment of the trademark, the mark must be considered to be well known and thereby subject to broad protection in accordance with the provisions of Article 6, second Paragraph, of the Finnish Trademark Act. The basic rule under that Article is that trade symbols shall be regarded as leading into confusion under the Act only if they apply to identical or similar kinds of goods. According to the second Paragraph of the Article confusability of symbols "can be referred to in favour of such symbol which has a reputation in this country, if the use of a symbol of another without due cause would mean taking an unfair advantage of, or being detrimental to, the distinctive character or the reputation of the earlier mark." (Complainantís translation).
Third, Complainant contends that Respondent cannot have made itself generally known by the domain name at issue prior to the commencement of the proceedings at hand and, according to Complainant, it is not aware of any trademark registration or application for registration in any country which would have been filed by Respondent or any other party for the mark "K-MARKET." Furthermore, Complainant is not aware that the symbol would be used as a trademark for any goods or services in any country of the world by Respondent or that any real and bona fide preparations would have been made for initiating such use.
Fourth, Complainant asserts that Respondent has initiated a website at the address in question containing an indication that that site would be used for disseminating information on Complainantís activities, including, without permission, several links to websites of various subsidiaries of Complainant and also some of Complainantís competitors, such as "www.eurospar.fi". According to Complainant, its business activities is undoubtedly disrupted by such unauthorised use of the trademark K-MARKET."
Fifth, Complainant contends that Respondent contacted Complainant with a direct offer to sell the domain name at issue for a suggested price of Euro 950. Complainant has submitted a copy of the e-mail from Respondent containing that offer. Complainant has submitted a copy of that e-mail in Finnish, with an English translation, which reads:
Dear decision-making body. As an eager village shop supporter I have maintained at my own cost net pages <k-market.net> which contain the addresses of the nearest K-Market-retail shops and to which one can send own proposals for improvements or other wishes. As we are living in these net shopping days when the use of network is growing the most important thing is "location, location, location". In my opinion there is no other suitable net address for K-Market retail shops than <k-market.net>. I am very busy right not and therefore I am willing to offer you my domain name <k-market.net> at the moderate costs I have had maintaining this service. I would like to have 950 EUR. Thanking you in anticipation. Minna Heikkinen.
The original Finnish e-mail contains an indication which seems to state that the mail was sent on January 18, 2001.
Sixth, according to Complainant, these circumstances indicate that the domain name at issue was initially registered for the sole purpose of selling the domain name registration to Complainant for a valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name.
In summary, Complainant finds that the factual circumstances can not amount to any conclusion other than that the act of registration in this case constitutes use in bad faith.
In accordance with Paragraph 4.i of the Policy and for the reasons described, Complainant requests that the Administrative Panel issue a decision to the effect that the contested domain name be transferred to Complainant.
Respondent has submitted an undated document (Response) in e-mail form which was received by the Center on October 16, 2001, and which contains some statements in relation to the Complaint. Updated contact information was provided, indicating an address in Vantaa. The statements made in the document include a translation into English of the Finnish text included in the webpages under <k-market.net> (seemingly corresponding basically to the one included in the Finnish version in the printout submitted by Complainant).
The Panel discusses below under "Discussions and Findings" which value this statement could be given in the considerations relating to the case.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Panel notes that, according to the Registrar Verification, the Uniform Domain Name Dispute Resolution Policy applies to the domain name registration at issue.
Paragraph 4.a of the Policy directs that Complainant must prove each of the following
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights,
- that Respondent has no rights or legitimate interests in the domain name, and
- that the domain name has been registered and is being used in bad faith.
In the following parts of the Decision the Panel discusses each of those elements.
As regards the e-mail statement by Respondent, which was received by the Center on October 16, 2001, the Panel notes that the Center issued a Response Deficiency Notification on October 17, 2001. In that Notification, the Center requested Respondent to remedy the following deficiencies: a) that the Response was not submitted in one original and four copies as required under, inter alia, Paragraph 5(b) of the Rules, b) that the Response did not specify a preferred method of communication as required under Paragraph 5(b)(iii), c) that the Response did not state that a copy of it had been sent to Complainant as required under Paragraph 5(b)(vii), d) that the Response did not contain a full statement required under Paragraph 5(b)(viii) and, e) that the Response had not been signed by Respondent as required under Paragraph 5(b)(viii). It was also pointed out that Respondent had not specified whether Respondent wanted to have the dispute decided by a single-member or a three-member Panel. Respondent was communicated this Notification by e-mail to the e-mail address indicated in the statement, and Respondent was given time until October 24, 2001, to remedy the deficiencies. Respondent sent the required four hard copies of its statement, but no other deficiencies where cured within or after the time limit.
The Panel finds that the observations made by Respondent in the statement in question certainly relate to the substance of the case. The requirements under the Rules to which the Center has pointed in the Response Deficiency Notification are of course of differing significance. Those requirements all serve, however, a certain purpose, in particular to ensure a fair proceeding so that the interests of all parties are properly taken into account. Those requirements can thus not be disregarded. The Panel would fail in its responsibilities if it built its reasoning on a statement about which Respondent, despite the opportunity given, has failed to remedy some serious deficiencies. The Panel therefore must conclude that Respondent is in default.
In the case of default by a Party, Paragraph 14 of the Rules prescribes that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has been given an opportunity to remedy deficiencies in the statement made, which remedies, if effected, could have transformed the statement into a proper Response. This has not been done. As mentioned, the Panel has found Respondent to be in default and the Panel also cannot find that such exceptional circumstances exist as mentioned above. Therefore, the Panel will have to basically operate on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.
Identity or Confusing Similarity
In this respect Complainant has, according to Paragraph 4.a(i) of the Policy to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <k-market.net>.
According the documentation submitted by Complainant, it is the owner of four trademark registrations containing as a basic element the notion "K-MARKET" with an addition of one or more of the letters "K". The documentation submitted also suggests that the trade symbol at issue would enjoy protection on the basis of establishment on the market in Finland. The Panel agrees with Complainantís statement that the trademarks in question are to be considered as well known in Finland and thus enjoying the wide protection under Article 6, second Paragraph, of the Finnish Trademark Act.
The domain name contains the trademark "K-MARKET" with the addition of ".net". As has been found in several earlier decisions, such an addition is not a sufficiently distinguishing factor to change the likelihood for confusion.
On the basis of these considerations, the Panel concludes that there exists in fact a confusing similarity between the domain name at issue and Complainantís trademarks.
Rights or Legitimate Interests in the Domain Name
In this respect, Complainant has, according to Paragraph 4.a(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name.
Respondent has not contested Complainantīs allegation that it has not licensed or permitted Respondent to use any of its trademarks or otherwise has licensed or permitted Respondent to apply for any domain name incorporating any of those marks. The Panel agrees with Complainant, to the effect, that the trademark "K-MARKET" is not one that Finnish traders would choose unless seeking to create an impression of an association with Complainant. Respondent has not denied this; on the contrary it would seem that its webpage was created in order to, in certain ways, influence Complainant.
On the basis of these considerations, the Panel can come to no other conclusion than that Respondent has not, in the sense of that notion in the Policy, any rights or legitimate interests in the domain name at issue.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4.a(iii) of the Policy, to prove that the domain name has been registered and is being used in bad faith.
Paragraph 4.b sets out the circumstances which in particular but without limitation, shall, if found by the Panel to be present, be considered as evidence of registration and use of a domain name in bad faith. Those circumstances are essentially:
i) that the domain name has been registered primarily for the purpose of selling, renting or otherwise transferring it to a Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, or
ii) that the domain name has been registered in order to prevent the owner of the mark from reflecting it in a corresponding domain name, provided that a pattern of such conduct is proved, or
iii) that the domain name has been registered primarily for the purpose of disrupting the business of a competitor, or
iv) that by using the domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainantís mark.
The Panel has first to consider whether the circumstances proven in this case would amount to bad faith conduct in the sense of these provisions.
Complaint has, as regards bad faith, alleged that Respondent has taken active steps to conceal its true identity in connection with the registration of the domain name. In the view of the Panel, the mailing address indicated by Respondent at the time of the registration is not a valid mailing address; on the other hand the e-mail address given by Respondent seems to have been valid. The Panel cannot find that the circumstances invoked by Complainant are sufficient to prove that Respondent has deliberately tried to conceal its true identity.
On the other hand, Complainantís allegations as to the absence of registrations and registration applications for Respondent of the mark "K-MARKET" and as to the absence of any use of that mark by Respondent for any goods or services anywhere in the world are supported by the circumstances in the case. In fact, the documentation submitted and the statements made point in one and the same direction, namely that Respondent has set up the website relating to the domain name at issue primarily for providing a sort of discussion forum concerning Complainantís activities. The Finnish text of the webpage clearly contains links to, for instance, the nearest K-Market shop. Furthermore, it is, in the view of the Panel, also established that Respondent has offered to sell the domain name at issue to Complainant for an amount of 950 Euros.
Complainant has alleged that its business "undoubtedly is disrupted by such unauthorised use of its trademark." The Panel agrees with Complainant that its business may have been disrupted Ė or rather "disturbed" Ė by the activities of the website in question. A different issue is whether those activities - and the registration as such of the domain name Ė meets any of the requirements relating to bad faith which have been referred to above under i) to iv). Complainant has invoked bad faith on the side of Respondent both generally and more specifically under the provisions referred to under i) above.
The Panel notes in this respect first that the domain name at issue was registered on April 22, 2000, and that the offer to sell it to Complainant was made in the e-mail of supposedly dated January 18, 2001. Before that point in time the website seems to have been used mainly for the purpose of discussing Complainantīs activities. In any case, no indications have been given that Complainant before that date had taken any actions in relation to the website.
As regards first the alleged bad faith under (i) above, the Panel can not find it to be established that the domain name has been established primarily for the purpose of selling it to Complainant. In this respect the Panel also notes that the amount requested for the transfer of the domain name registration to Complainant is certainly in excess of "documented out-of-pocket costs directly related to the domain name" but that it is fairly modest in comparison with amounts requested in other cases which this Panelist has come across.
As regards the other circumstances referred to under (ii) to (iv) above, Complainant has not specifically invoked those and the Panel cannot, in any case, find any of them to be present, nor any other circumstances which would constitute bad faith in the sense of the Policy.
Thus, the Panel cannot, in summary, find it to be established that the domain name at issue has been registered and is being used in bad faith in the sense of the Policy.
On the basis of the foregoing, the Administrative Panel concludes that it has been established that the domain name at issue is confusingly similar to Complainantís trademarks and that Respondent has no rights or legitimate interests in the domain name at issue but that it has not been established that the domain name has been registered and is being used in bad faith in the sense of the Policy.
Consequently, Complainantís request for transfer of the domain name to Complainant shall be denied.
Complainantís request for a transfer of the domain name <k-market.net> to Complainant is denied.
Dated: November 6, 2001